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Legal
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WD30074290165 Requisition #
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What you will love about Johnson Controls:

We’ve been dedicated to protecting the environment since our invention of the electric thermostat in 1885, which provided a fundamental shift in the energy efficiency of buildings. Now, all over the world, our products and services empower customers and communities to consume less energy and conserve resources.

  • Global, innovative, industry leader
  • Embraces diversity
  • Growth opportunities abound
  • Fast paced, evolving company, always learning, always adapting
  • Great benefits; including Healthcare related wellness discounts,  great 401k match, company funded retirement program, vacation, sick time, floating holidays and national holidays
 
 
What you will do
 

Based in Westford Massachusetts, the Patent Agent will report to the Legal Director of Intellectual Property and will be responsible for invention disclosure and patent filing activities for several Johnson Controls IP portfolios. The successful candidate will work with the engineers and software developers to identify and disclose patentable inventions, run patent review team meetings, and work with outside counsel to file patent applications approved by the review team members in addition to drafting some applications in-house.

 
 
 
 
How you will do it
 
  • Meet regularly with engineering groups to identify potentially patentable inventions such that all new products are covered with sufficient IP.
  • Delivering intellectual property training sessions to all technical staff including patents, trade secrets, and open source software.
  • Working with counsel to file applications in US and abroad and to manage prosecution activities.
  • Drafting regular US utility patent applications, design applications and provisional applications.
  • Assist inventors to draft invention disclosure documents.
  • Participate in patent licensing projects associated with the supported development groups which will include at least access control, video surveillance, retail solutions, and fire detection.
  • Develop cost reduction strategies to reduce patent prosecution costs while maintaining a high level of prosecution quality.
  • Perform patent searches to enable product clearances in collaboration with in-house IP attorneys.

What we look for
 
Required
 

Candidates will have a track record of successful Patent prosecution and client counselling in comparable in-house organizations.

 
  • Bachelor’s degree required (electrical engineering and/or computer science preferred)
  • Registered as an agent to practice before the US Patent and Trademark office
  • 4+ years of Patent prosecution experience preferably at large corporations
  • Solid understanding of Copyright, Trade Secret, and Trademark principles
  • Excellent writing and communication skills
  • Experience with open source software a plus
  • Excellent client counseling skills are a must
  • A team player mindset and attitude
  • Strong interpersonal skills
  • Collaboration skills to enable working closely with colleagues in the in-house IP team and with the engineering function.
  • Ability to work with in-house and external patent attorneys to direct the drafting of patent claims to support licensing programs
  • Ability to work effectively across all levels of the organization and build strong relationships with engineering teams
  • Strong problem solving skills, self-motivated, and having the ability to understand complex technical inventions.
 
 

Johnson Controls is an equal employment opportunity and affirmative action employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, age, protected veteran status, status as a qualified individual with a disability, or any other characteristic protected by law. For more information, please view EEO is the Law. If you are an individual with a disability and you require an accommodation during the application process, please visit www.johnsoncontrols.com/tomorrowneedsyou.  

 

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